Board of Appeals discusses §1.132 derivation declaration and rejection under §102(f)

Takeaway: An Applicant attempted to disqualify, as prior art, a publication listing two of the four inventors as authors. In a §1.132 declaration, the four inventors stated that the publication was derived from the work of the two author inventors. The Examiner found the declaration insufficient to overcome the §102(a) rejection because it did not attest to derivation from all of the inventors. The Examiner then added a rejection under §102(f) ("did not invent"). The Applicant appealed, arguing that a derivation declaration was only required to attest to derivation from at least one inventor, and that the §102(f) rejection was in error since the Examiner had not identified an inventor not named on the application. The Board affirmed the §102(a) rejection, holding that the declaration must attest to derivation from the entire inventive entity in order to show the publication was not "by another." However, the Board reversed the §102(f) rejection, finding that the statement in the declaration which referred to "our invention" provided enough evidence of correct inventorship to overcome the rejection.

Details:

Ex parte Abe
Appeal 2010000029; Serial No. 10/128,474; Tech. Center 2400
Decided:  June 28, 2012

The Examiner rejected all claims under §102(a) by a publication ("XPath") authored by two of the four inventors and submitted in an IDS. The Applicant attempted to disqualify the Xpath publication as prior art by filing a derivation declaration under §1.132. The Examiner found the declaration insufficient, since MPEP §716.10 "requires that the relevant portions of the reference originated with or were obtained from applicant (i.e., inventive entity)" (emphasis added). However, the Applicant's declaration merely stated that the reference was derived from the work of only two out of the four inventor.

The Examiner also added a rejection under §102(f) ("did not invent"). The Examiner explained as follows:

Applicant has declared that only two of the four inventors have derived the relevant portions of the [Xpath reference]. Given the reference teaches all the claimed limitations, it is apparent that the inventive entity (Mari Abe, Scott D. Dewitt, Masahiro Hori, and Brad B. Topol) are not the sole inventors of the claimed invention.

In an Appeal Brief, the Applicant continued to argue that the §1.132 declaration had removed Xpath as prior art. The Appeal Brief also specifically addressed various dependent claims, arguing that the Xpath did not teach all the limitations of those claims. In explaining why Xpath had been removed as prior art, the Applicant asserted that a §1.132 declaration disqualified the reference as long as the reference was "derived from at least one Applicant," as opposed to the Examiner's requirement that the derivation be from the work of all inventors. The Applicant explained that the Examiner's reading led to the "anomalous result" that §1.132 declarations could be used when "all possible inventors (as described in the article) may not have been named as inventors" yet could not be used when "all possible inventors (as described in the article) have been named as inventors."

The Applicant turned to the §102(f) rejection. The Applicant first addressed the Examiner's statement implying the inventive entity must be incorrect by noting that inventorship was on record in the executed Declaration and Power of Attorney. According to the Applicant, the §102(f) rejection was in error because the Examiner had not identified any inventor not named on the declaration.

In the Answer, the Examiner handled the §102(a) rejection by simply stating that the declaration did not overcome the rejection. As to §102(f), the Examiner explained:

Example 2 of MPEP 716.10 requires that the relevant portions of the reference originated with or were obtained from applicant (i.e. inventive entity). Applicant has declared that the reference "A Visual Approach to Authoring XPath Expressions" is derived from the work of only two out of the four inventors. Therefore, it raises a question as to whether the inventive entity (i.e. Abe, Hori, Dewitt and Topol) are the sole inventors since the claimed subiect  matter was only derived from Abe and Hori. The Examiner requested it be made clear that Dewitt and Topol did not contribute to the claimed invention (e.g. they only contributed to a portion of the specification that was not claimed) in order to rule out the possibility that the inventive entity are not the sole inventors of the claimed subject matter.

The Applicant filed a Reply Brief noting that the Examiner's Answer amounted to a request to remove inventors, while inventorship is a question of fact and cannot be manipulated for the convenience of the Examiner. Moreover, the Applicant explained, inventorship is determined on a claim by claim basis:

Dewitt and Topol may be inventors of only some of the claims. Similarly, Abe and Hori may be inventors of only some of the claims. The fact that certain claims were not identically disclosed by the prior art article by Abe and Hori evidences that additional contribution was made to the claimed invention.

On appeal, the Board affirmed-in-part. The §102(a) rejection of the independent claims was affirmed, but the §102(f) rejection was reversed. The Board also reversed the §102(a) rejection of some of the dependent claims, finding that various features in dependent claims were not disclosed by the Xpath reference.

The Board clarified that attesting to derivation from a subset of the inventors was sufficient not remove the reference as "by another" under §102(a). "By another" means any difference in inventive entity, so the fact that only two inventors were listed as authors of the Xpath publication indicated that the publication was "by another." A §1.132 declaration attesting to derivation from all the inventors would thus disqualify the reference, by showing that the inventive entity is the same. However, derivation from only a subset of the inventors means the reference is still "by another" and is thus prior art. 

In reversing the §102(f) rejection, the Board explained that designation of the authors of a publication not raise a presumption of inventorship with respect to the subject matter disclosed in the article so as to justify a rejection under §102(f). (MPEP §715.01(c)). Such a rejection does require the Applicant to "provide a satisfactory showing by way of affidavit under 37 CFR 1.132 that the inventorship of the application is correct." (MPEP §715.01(c)). The Board found the Applicant did exactly that, by submitting a declaration signed by all inventor stating "the disclosure found in the [Xpath publication] is our own invention."

My two cents: Reading in between the lines, the Board's brief opinion suggests that the Applicant had simply misinterpreted the law on §1.132 derivation declarations. Yet the Applicant fought long and hard for its position, when it seems that the problem could be taken care of by rewording the declaration. Unless, factually, the Applicant simply couldn't make the statement that the two author inventors derived from the work of the other two (non-author) inventors? The Applicant's arguments suggested that inventorship may have varied from claim to claim. So maybe another approach would be to split the application into two, with different inventive entities? I gotta admit, I got a headache thinking about this one.

Was the Examiner off base in giving the §102(f) rejection? Essentially, the §102(f) rejection seemed to be the result of a discrepancy between Abe, Hori, Dewitt & Topol being named the inventive entity and a finding that a publication authored by Abe & Hori alone disclosed all claim limitations. 

Board reverses 101 "transitory" rejection because specification amendment removed reference to signals

Takeaway: The Patent Trial and Appeals Board reversed a § 101 rejection of a "computer program product tangibly embodied in an information carrier" because the Applicant had amended the specification during prosecution to remove references to signals and carriers. Although recognizing that In re Nuijten required a rejection under § 101 "when the broadest reasonable interpretation of a claim covers a signal per se," the Board determined that the broadest reasonable interpretation should take into account the specification amendment that removed the reference to signals and carriers.

Details:
Ex parte Pyka
Appeal 2010005667; Appl. 11/025,686; Tech. Center 2100
Decided:  Dec. 31, 2012

The application on appeal was directed to computer searching using global agreed-upon data structures. A representative claim on appeal read:

     14. A computer program product tangibly embodied in an information carrier, the computer program product comprising instructions that, when executed, cause at least one processor to perform operations comprising:
...
     wherein the request broker is configured to receive the search request and to transmit the search request to one or more non-local servers for execution of the search request; and
     wherein the standardized data structure is a globally agreed-upon data structure.
(Emphasis added.)

During prosecution, the Examiner rejected claim 14 under § 101 as being directed to non-statutory subject matter. Based on a particular paragraph in the specification, the Examiner noted that "Appellant intends the information carrier to include signals as such the claim is drawn to a form of energy." However, the Examiner further noted that "energy is not one of the four categories of invention."

In response, the Applicant amended the specification to delete the sentence upon which the § 101 rejection was based: "Optionally, further carriers and further signals embody computer program products (CPP) to be executed by further processors in computer 901 and 902." In the Remarks section, the Applicant stated that the amendment overcame the rejection "by narrowing the scope of the claim to statutory subject matter."

In a Final Office Action, the Examiner maintained the § 101 rejection and added an objection to the specification, alleging that the amendment by deletion introduced new matter.

The Applicant appealed the § 101 rejection and various prior art rejections. In the Appeal Brief, the Applicant first addressed the new matter objection. According to the Applicant, "a change does not equate to an addition" and "narrowing a specification's disclosure by deleting material is .... the antithesis of adding matter."  Turning to the § 101 rejection, the Applicant argued that claims should be interpreted in light of the amended specification; without the carriers and signals language in the specification, the claim was statutory.

The Examiner elaborated on his reasoning in the Answer:

The question here is given Appellant's specification would one of ordinary skill in the art interpret "information carrier" to include signals which are not statutory subject matter. The deletion of the phrase does not change what is meant by "information carrier". Appellant's specification states "Generally, carrier 970 is an article of manufacture having a computer-readable medium with computer-readable program code to cause the computer to perform methods of the present invention. Further, signal 980 can also include computer program product." Given this statement information carrier is would generally (most of the time) be a computer readable medium (as defined on pages 11 and 12 of the specification). However, an information carrier could also include the signal that holds the computer program product as stated.

The Applicant filed a Reply Brief. After noting that "removing material from the specification is specifically permitted by the [C.F.R.]", the Applicant explained that the Examiner's insistence that only originally filed matter be considered led to nonsensical results.

For example, if the reasoning in the Examiner's Answer were applied to the interpretation of claims, then the claims as originally-filed would indicate an intention on the part of an applicant to broadly claim his or her invention, any amendments to those claims would not and could not overcome that original intention, and the amended claims might never be allowed based solely on the original claiming intention of an applicant. The Appellant respectfully submits that this simply cannot be what the Patent statute and the rules of the Patent Office dictate ...

The Board reversed the § 101 rejection. The Board first noted that In re Nuijten required a rejection under § 101 "when the broadest reasonable interpretation of a claim covers a signal per se." However, the broadest reasonable interpretation should take into account the specification amendment that removed the "carriers and signals" sentence.

Thus, the broadest reasonable interpretation of claim 14's preamble ("[a] computer program product tangibly embodied in an information carrier") only covers a computer program product embodied in physical media (i.e., a nontransitory tangible media). When the scope of the claim language is considered in light of Appellants' amended Specification, we conclude that the claimed "tangibly embodied in an information carrier" means "materially or physically" embodied in a physical media (non-transitory tangible media), and not embodied in non-physical media (transitory propagating signals).

My two cents: Not sure why the Applicant deleted from the spec rather than amended the claim to add "non-transitory." The appeal was filed back in 2009, and I don't think adding "non-transitory" was in vogue back then like it is now.

I've seen many Board decisions that affirmed § 101 rejections when the spec was silent about signals, so it's interesting that the Board used the absence of signals in the amended spec to reverse the rejection. The PTO's current position is that silence in the spec about signals and computer readable media means signals are covered:

The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent.
(PTO 2010 Memo "Subject Matter Eligibility of Computer Readable Media.")

Says who? How did the PTO decide that the ordinary and customary meaning of CRM covers signals?

The Applicant's blanket statement that deleting from the spec can't possibly be new matter ignored Federal Circuit precedent. When the Appeal Brief was filed in 2009, the controlling law was Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1344 (Fed. Cir. 2008). In Baldwin, the Federal Circuit held:

The examiner rightly refused to allow the applicants to amend the specification to remove references to `heat' as the way of sealing the sleeve," for the change "would have broadened the patent and introduced impermissible new matter" and rendered the reissue claims "invalid for lack of support in the initial disclosure." 

The Federal Circuit reiterated this position more recently in Anascape, Ltd. v. Nintendo of America, Inc., 601 F. 3d 1333 (Fed. Cir. 2010).

Board reverses anticipation based on inherency when Applicant provides counterexamples

Takeaway: An Applicant appealed claims to a user interface and argued the limitation "determining a distance between the focus of attention and the display event." The Examiner relied on a drawing in an Excel user manual showing "tracer arrows," in conjunction with an inherency argument. Though the Examiner went to some effort to explain how one could draw inferences about what Excel was doing from the screen shot, the Applicant used counterexamples to demonstrate that Excel wasn't necessarily determining distance. (Ex parte Mackinlay, PTAB 2012.)
Details:
Ex parte Mackinlay
Serial No.  10/687,486; Tech Center 2100
Decided:  June 18, 2012

The claims were directed to aspects of a user interface. A representative claim on appeal read:

     1. A method of shifting attention comprising the steps of:
     determining the location for a focus of attention;
     determining a display event;
     determining the location of the display event;
     determining an attention shifting display element based on the display event, the determined location of the display event and the focus of attention; and
     determining a distance between the focus of attention and the display event;
     wherein the attention shifting display element is determined based on the determined distance, such that different types of attention shifting display elements are determined for different distances. 
(Emphasis added.)

The Examiner rejected the independent claim as anticipated by the printed publication "User's Guide Microsoft Excel, Version 5.0 1993" (Excel). The Examiner read the "determining an attention shifting element" on Excel's "tracer arrows to show the flow of data into a formula, based on the starting active cell within a worksheet, and the users choice of tracing precedents or dependents." The Examiner asserted that FIG. 4 of Excel taught "determining the distance 'length of the tracer arrow', from beginning active cell to the point of the arrow."

The Examiner elaborated on his reasoning in an Advisory Action:

Excel teaches a tracer arrow starting in one cell and ending in another cell, which is acknowledge by the Applicant. One of skilled art has to infer that some sort of calculations of the "length of the tracer arrow" has to be taken into consideration by the system in order to draw the arrow accordingly. Knowing the relative number of pixels between the two cells, as the Applicant states, provides measurements to the system for calculating how long to create the tracer arrow to achieve the goal of the arrow starting in one cell and ending in another.

On appeal, the Applicant argued the "determining a distance" limitation. The Applicant first explained that the reference did not explicitly teach the limitation:

The applied reference makes no indication or reference to the length of the tracer arrow, but instead discloses tracers that "track data flow by drawing arrows connecting the active cell with related cells on your worksheet. Tracer arrows point in the direction of data flow." See page 668, section "About Tracer Arrows" from Excel. Thus, Excel merely discloses that a trace arrow will originate in one cell and terminate in another cell.

The Applicant then attacked the Examiner's inherency argument by explaining how Excel could draw the tracer arrows without using distance:

[T]he graphic generating software used by Excel need only know the relative pixel coordinates between the two cells, not the distance. The arrow can then be drawn by many methods not requiring a calculation or determination of distance, for example determining the slope of the trace arrow and subsequently generating the trace arrow graphic starting at one cell and using the slope and horizontal range. In this example[,] no distance is calculated.

In the Answer, The Examiner elaborated on his inherency argument

     In order for Excel to automatically draw the "tracer" lines and arrows, the software application makes at least three determinations: 1) the location of the "active" cell; 2) the location of each "related" cell; and 3) the direction of the flow of data between the "active" cell and the "related" cells.
     Because Excel automatically makes these determinations and then automatically draws the "tracer" lines and arrows between the "active" cell and the "related" cells, Excel discloses determining a distance between the ''focus of attention" (i.e., the active cell) and the "display event" (i.e., the drawing of the "tracer" lines and arrows between the "active" cell and the "related" cells).

The Board agreed with the Applicant, finding that the reference did not disclose the feature at issue. With regard to inherency, the Board explained:

As pointed out by Appellants, there are at least two alternative ways to connect cells in a spreadsheet with tracer arrows, such as by connecting the respective cell coordinates, or by using a slope and horizontal range. In both alternatives proffered by Appellants (App. Br. 12-13), we agree that no distance determination is necessary.

The Board then reversed the anticipation rejection.

My two cents: A good example of the best way to beat an inherency argument: prove that the feature at issue is not actually required by demonstrating an alternative. The next time you make an inherency argument, spend a few minutes and see if you can come up with a counterexample. Your argument will be much more persuasive.

I do have one nitpick with the decision, in that I don't read the Applicant's inherency argument as offering two alternatives. Yes, the slope/range discussion is clearly one counter-example. But I'm not sure what the Board is referring to by "connecting respective cell coordinates". That sounds to me like the Applicant's characterization of the reference's explicit teachings. But hey, you only need one counterexample to win on inherency.